New guidelines


The Main Points for Examination of Service Mark Applications for Retail Services have been in effect for more than 10 years since their publication on April 20 1998. During this time, relevant local laws and regulations have changed; in addition, the ninth edition of the Nice Classification contains different interpretations of 'retail services' from those in previous editions. In practice, applicants often have difficulty in defining 'retail services'. All of these factors create inconsistency between the use of trademark rights and actual trading practices; as a result, trademark protection cannot be fully achieved. To elaborate on the concept of 'retail services', the Intellectual Property Office (IPO) published the Examination Guidelines on Retail Services, which took effect on February 1 2011. Consequently, the Main Points for Examination of Service Mark Applications for Retail Services were abolished on the same date.

New guidelines

The aims of the examination guidelines are to:

  • define the meaning, nature and categories of retail services;
  • provide guidance for examining the designations of retail services;
  • formulate principles for assessing similarity between retail services and other goods or services; and
  • elaborate on the use of retail service trademarks so as to serve as a reference for the IPO's trademark examiners.

Main points
The term 'retail services' is defined as bringing together a variety of goods (excluding transportation services) to enable customers to conveniently view and purchase them. In other words, a company gathers different types of goods (produced either by the company itself or by other producers) in one location (in either a physical store or a virtual one) with the aim of attracting a wide range of consumers. By providing a convenient shopping environment with related services, consumers are encouraged to purchase the goods.

While the goods grouped under 'retail services' are not limited to those produced or manufactured by other companies - and may also include all types of goods sold under self-developed brands - a trademark application covering retail services protects all of the services provided by the applicant, not just the physical goods displayed for sale.

Retail services are classified into "retail of general goods" and "retail of specific goods". The former involves the collection of a variety of goods at the same location, enabling consumers to view and purchase them (eg, in supermarkets). The latter involves the collection of specific goods, or a specific range of goods in the same location, enabling consumers to view and purchase them (eg, the retail of clocks and watches). In principle, the IPO will not accept a trademark application that is designated for use on both the retail of general goods and the retail of specific goods.

Trademark use in connection with retail services includes the use of a trademark on articles, documents and advertisements or publicity materials, related to the applicant's business, in order to promote its services. These can include:

  • company signboards;
  • signage on each floor of a store;
  • signs indicating sales zones;
  • shopping carts and shopping baskets;
  • display shelves;
  • cash registers and receipts;
  • shop windows;
  • salespersons' uniforms, hats and name badges;
  • fitting rooms;
  • product catalogues;
  • packaging;
  • wrapping paper and shopping bags for the goods sold.

Some designations are not suitable as the names of retail services - such as the 'retail of customized XX', 'logistic centre' and 'telephone shopping'.

For further information on this topic please contact Jane Hui-Ching Chen at Lee and Li Attorneys at Law by telephone (+886 2 715 3300), fax (+886 2 2718 7099) or email ([email protected]).